Case 1:17-cv-00871-LPS Document 311 Filed 07/30/19 Page 1 of 4 PageID #: 13542
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`C.A. No. 17-871 (LPS) (CJB)
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`Plaintiffs,
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`Defendants.
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`ETHICON LLC,
`ETHICON ENDO-SURGERY, INC. and
`ETHICON US LLC,
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`INTUITIVE SURGICAL, INC.,
`INTUITIVE SURGICAL OPERATIONS,
`INC. and INTUITIVE SURGICAL
`HOLDINGS, LLC,
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`v.
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`PLAINTIFFS’ NOTICE OF WAIVER OF APPEAL REGARDING THE COURT’S
`ORDER INVALIDATING THE JANUARY 2018 CERTIFICATE OF
`CORRECTION RELATING TO U.S. PATENT NO. 8,479,969
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`During the claim construction phase of this case, Intuitive Surgical, Inc., Intuitive
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`Surgical Operations, Inc., and Intuitive Surgical Holdings LLC (collectively “Intuitive”) argued
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`that the Certificate of Correction issued in January 2018 relating to claim 24 of U.S. Patent No.
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`8,479,969 (“the ’969 Patent”) was invalid. D.I. 254 at 6. The Court’s claim construction order
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`on December 28, 2018, adopted the original (uncorrected) claim language for claim 24, and
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`ordered that the parties submit a joint status report on January 7, 2019 advising the Court how to
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`proceed with respect to the Certificate of Correction. D.I. 255 at 1, 3. On February 11, 2019,
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`after having considered the parties’ claim construction briefing and the joint status report, the
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`Court adopted Intuitive’s position and issued an order invalidating the Certificate of Correction
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`issued in January 2018 relating to claim 24 of the ’969 Patent. D.I. 292.
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`Separately, on June 14, 2018, Intuitive filed three petitions for inter partes review of the
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`’969 Patent. In each of the IPR petitions, Intuitive confirmed its position that the January 2018
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`Ethicon Exhibit 2027.001
`Intuitive v. Ethicon
`IPR2018-01247
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`C.A. No. 17-871 (LPS) (CJB)
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`)
`)
`)
`)
`)
`)
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`)
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`Plaintiffs,
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`Defendants.
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`ETHICON LLC,
`ETHICON ENDO-SURGERY, INC. and
`ETHICON US LLC,
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`INTUITIVE SURGICAL, INC.,
`INTUITIVE SURGICAL OPERATIONS,
`INC. and INTUITIVE SURGICAL
`HOLDINGS, LLC,
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`
`
`v.
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`PLAINTIFFS’ NOTICE OF WAIVER OF APPEAL REGARDING THE COURT’S
`ORDER INVALIDATING THE JANUARY 2018 CERTIFICATE OF
`CORRECTION RELATING TO U.S. PATENT NO. 8,479,969
`
`During the claim construction phase of this case, Intuitive Surgical, Inc., Intuitive
`
`Surgical Operations, Inc., and Intuitive Surgical Holdings LLC (collectively “Intuitive”) argued
`
`that the Certificate of Correction issued in January 2018 relating to claim 24 of U.S. Patent No.
`
`8,479,969 (“the ’969 Patent”) was invalid. D.I. 254 at 6. The Court’s claim construction order
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`on December 28, 2018, adopted the original (uncorrected) claim language for claim 24, and
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`ordered that the parties submit a joint status report on January 7, 2019 advising the Court how to
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`proceed with respect to the Certificate of Correction. D.I. 255 at 1, 3. On February 11, 2019,
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`after having considered the parties’ claim construction briefing and the joint status report, the
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`Court adopted Intuitive’s position and issued an order invalidating the Certificate of Correction
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`issued in January 2018 relating to claim 24 of the ’969 Patent. D.I. 292.
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`Separately, on June 14, 2018, Intuitive filed three petitions for inter partes review of the
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`’969 Patent. In each of the IPR petitions, Intuitive confirmed its position that the January 2018
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`Ethicon Exhibit 2027.001
`Intuitive v. Ethicon
`IPR2018-01247
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`Case 1:17-cv-00871-LPS Document 311 Filed 07/30/19 Page 2 of 4 PageID #: 13543
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`Certificate of Correction was “ineffective” and presented invalidity arguments as to the
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`obviousness of the original (uncorrected) claim language. Intuitive Surgical, Inc. v. Ethicon
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`LLC, IPR2018-01247, Paper No. 1 at 51 n.3; Intuitive Surgical, Inc. v. Ethicon LLC, IPR2018-
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`01248, Paper No. 1 at 62 n.4; Intuitive Surgical, Inc. v. Ethicon LLC, IPR2018-01254, Paper No.
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`1 at 89 n.5. Ethicon filed its patent owner responses in the IPR petitions on April 19, 2019 and
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`May 2, 2019. In the Patent Owner Responses, Ethicon informed the PTAB of this Court’s
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`invalidation of the Certificate of Correction and addressed the issue of validity based on the
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`original (uncorrected) claim language. On July 15, 2019, Intuitive filed its reply in two of the
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`IPR petitions and requested that the PTAB apply the Certificate of Correction to the IPR
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`proceeding. Intuitive argues that the District Court’s order invalidating the January 2018
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`Certificate of Correction is “not relevant to these [IPR] proceedings” and that the order “will be
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`subject to appeal if and when the District Court renders judgment, and Patent Owner has
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`specifically reserved the right to appeal the interlocutory order.” Intuitive Surgical, Inc. v.
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`Ethicon LLC, IPR2018-01247, Paper No. 18 at 4; Intuitive Surgical, Inc. v. Ethicon LLC,
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`IPR2018-01254, Paper No. 17 at 4. Thus, Intuitive is requesting that the PTAB apply the
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`Certificate of Correction to the IPR proceedings and address only the issue of validity of the
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`corrected claims on the basis that this Court’s February 11, 2019 order is not final.
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`Plaintiffs hereby waive the right to appeal the Court’s February 11, 2019 order
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`invalidating the Certificate of Correction issued in January 2018 relating to claim 24 of the ’969
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`Patent.
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`2
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`Ethicon Exhibit 2027.002
`Intuitive v. Ethicon
`IPR2018-01247
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`Case 1:17-cv-00871-LPS Document 311 Filed 07/30/19 Page 3 of 4 PageID #: 13544
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`MORRIS, NICHOLS, ARSHT & TUNNELL LLP
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`/s/ Brian P. Egan
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`Jack B. Blumenfeld (#1014)
`Brian P. Egan (#6227)
`1201 North Market Street
`P.O. Box 1347
`Wilmington, DE 19899
`(302) 658-9200
`jblumenfeld@mnat.com
`began@mnat.com
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`Attorneys for Plaintiffs
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`OF COUNSEL:
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`Elizabeth Stotland Weiswasser
`Anish R. Desai
`WEIL GOTSHAL & MANGES LLP
`767 Fifth Avenue
`New York, NY 10153
`(212) 310-8000
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`Diane P. Sullivan
`WEIL GOTSHAL & MANGES, LLP
`17 Hulfish Street, Suite 201
`Princeton, NJ 08542
`(609) 986-1120
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`Christopher T. Marando
`Christopher M. Pepe
`Daniel Musher
`Matthew David Sieger
`WEIL GOTSHAL & MANGES, LLP
`2001 M Street NW, Suite 600
`Washington, DC 20036
`(202) 682-7000
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`July 30, 2019
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`3
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`Ethicon Exhibit 2027.003
`Intuitive v. Ethicon
`IPR2018-01247
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`Case 1:17-cv-00871-LPS Document 311 Filed 07/30/19 Page 4 of 4 PageID #: 13545
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`CERTIFICATE OF SERVICE
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`I hereby certify that on July 30, 2019, I caused the foregoing to be electronically filed
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`with the Clerk of the Court using CM/ECF, which will send notification of such filing to all
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`registered participants.
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`I further certify that I caused copies of the foregoing document to be served on July 30,
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`2019, upon the following in the manner indicated:
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`John W. Shaw, Esquire
`David M. Fry, Esquire
`Karen E. Keller, Esquire
`SHAW KELLER LLP
`I.M. Pei Building
`1105 North Market Street, 12th Floor
`Wilmington, DE 19801
`Attorneys for Defendants
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`Robert A. Van Nest, Esquire
`Brian L. Ferrall, Esquire
`R. Adam Lauridsen, Esquire
`William S. Hicks, Esquire
`Eduardo E. Santacana, Esquire
`Ankur Shingal, Esquire
`Divya Musinipally, Esquire
`KEKER VAN NEST & PETERS
`633 Battery Street
`San Francisco, CA 94111-1809
`Attorneys for Defendants
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`VIA ELECTRONIC MAIL
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`VIA ELECTRONIC MAIL
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`/s/ Brian P. Egan
`___________________________
`Brian P. Egan (#6227)
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`Ethicon Exhibit 2027.004
`Intuitive v. Ethicon
`IPR2018-01247
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